Article excerpt

I. INTRODUCTION

Congress created the United States Court of Appeals for the Federal Circuit in 1982 to bring greater uniformity to the country's patent laws. (1) Drawing on this purpose, the Federal Circuit has expanded this call for uniformity by also emphasizing the need for predictability and certainty in the law. The court thus has articulated fairly formalistic approaches to a number of issues. The use of bright-line rules, however, is often at the cost of fairness. In the area of property law, Professor Carol Rose highlighted this tension, and noted the historical, pendulum-like shifts between clear, hard-edged, "crystal" rules and uncertain "muddy" rules that afford greater fairness. (2) Professor Chisum identified this same tension in patent law in his important piece, published in this journal in 1998, coining the phrase "the Fair Protection-Certainty Conundrum." (3)

The Federal Circuit increasingly has articulated rules of law to promote certainty, at the expense of fairness. The root of this bias likely derives from the court's Congressional mandate to promote uniformity and certainty in patent law. (4) This rules-based approach, however, is not without critics. Professor Jay Thomas recently detailed the evolution of this shift to formal, simplistic rules, noting that this approach may in fact impair innovation, not facilitate it. (5) Professor Arti Rai also has expressed the view that such formalism impairs innovation policy. (6) This Essay posits, however, that not all of the blame should fall on the Federal Circuit's shoulders. The Supreme Court has expressly encouraged this approach in its recent patent jurisprudence. This Essay will first identify the various ways in which the Federal Circuit has opted for the "certainty" side of the Fair Protection-Certainty Conundrum. Next, the Essay surveys recent Supreme Court cases which show that the Supreme Court has enabled this shift, making the Court complicit in the Federal Circuit's formalism agenda.

II. FORMALISM AT THE FEDERAL CIRCUIT

The tendency towards crystal rules at the Federal Circuit transcends any particular issues in patent law. For example, in the context of the on-sale bar to patentability under 35 U.S.C. [section] 102(b), the court has required that, to be "on-sale," the invention must have been subject to a formal commercial offer to sell, as defined by general principles of contract law. (7) Similarly, the court requires a formal commercial offer for infringement under 35 U.S.C. [section] 271(a)'s "offer to sell" form of infringement. (8) The court reasoned under both of these scenarios that the requirement of a formal commercial offer would facilitate greater certainty in the respective law. (9)

The Federal Circuit has articulated formalistic rules in the context of the written description requirement for patents on genes. The court generally requires the disclosure of the entire genetic sequence, (10) although recently the court appears to have liberalized this harsh standard by allowing some functional description, so long as the structure that performs that function is known in the art field. (11) The court has also turned its attention to obviousness. (12) Whereas the Supreme Court's test for obviousness identified four relevant factors, (13) the Federal Circuit has elevated a fifth factor as a bright-line requirement--the need for some teaching or motivation to combine prior art references to yield the claimed invention. (14)

Two key areas, however, most dramatically highlight the Federal Circuit's formalistic agenda--claim construction and the doctrine of equivalents. One of the most significant steps the Federal Circuit took towards formalism was removing the jury from the most important step in a patent infringement suit--the construction of the claim language. In Markman v. Westview Instruments, the court concluded that claim construction is a pure matter of law to be decided by the judge and, consequently, reviewed on appeal de novo. …